2019Hu11787. Nullification of registration (Trademark)

Skik, Inc.

Attorney Seo-young et al., Counsel for the defendant-appellant

Rohyang Co., Ltd.

Law Firm Yang-han et al., Counsel for the defendant-appellant

Patent Court Decision 2019Heo2837 Decided October 2, 2019

May 14, 2020

The appeal shall be dismissed.

The costs of appeal shall be borne by the plaintiff.

The grounds for appeal are determined.

1. Whether the registered trademark of this case is a non-distinctive trademark (ground of appeal No. 1) (Article 6(1) of the former Trademark Act (wholly amended by Act No. 14033, Feb. 29, 2016; hereinafter the same) provides that “a trademark, other than subparagraphs 7 through 6, where it is impossible to obtain registration of a trademark, by which consumers can identify whose business the trademark is indicated” (see, e.g., Article 33(1)7 of the current Trademark Act only provides for the same purpose with the same expression under Article 33(1)7). This means that even if a trademark does not fall under subparagraphs 1 through 6 of the same Article, it is difficult to distinguish the source between one’s own goods and another’s goods cannot be registered. Whether a trademark constitutes a non-distinctive trademark is difficult to determine its distinctiveness after considering its concept, relationship with the designated goods, and the circumstances of the society, 2017 after being determined objectively by the Supreme Court Decision 201.

The court below held that the part of this case's registered trademark of this case is a mark with raw materials related to the designated goods, and thus, it has no distinctiveness, while the figure of this case's registered trademark of this case is recognized as distinctive. Thus, the registered trademark of this case falls under Article 6 (1) 7 of the former Trademark Act.

In light of the relationship with the designated goods and the circumstances of the transaction society, it is difficult to see that the packaging design of the goods in the category of the goods has been functioned as the distinguishing mark of the source, and there is no ground to see that it is not reasonable to see that the above design is exclusive for a specific person for public interest.In light of the legal principles and records as seen in the judgment of the court below, the judgment of the court below did not err by misapprehending the legal principles on Article 6 (1) 7 of the former Trademark Act, or by exceeding the bounds of the principle of free evaluation of evidence against logical and empirical rules, as alleged in the grounds of appeal.

2. Whether a prior-use trademark is a well-known trademark (ground of appeal No. 3) under Article 7 (1) 10 of the former Trademark Act (see, e.g., Supreme Court Decisions 97Hu3975, 3982, Feb. 26, 199; 2013Hu1207, Oct. 15, 2015) should be determined on the basis of whether the prior-use trademark is so-called well-known trademark under Article 7 (1) 10 of the former Trademark Act (see, e.g., Article 34 (1) 11 of the current Trademark Act only with the same purport as the expression only; hereinafter, the current Trademark Act provides the same purport) or whether the prior-use trademark is widely known objectively by transaction circumstances or by social norms, considering the period, method, mode, and scope of trade (see, e., Supreme Court Decisions 97Hu3975, Oct. 26, 199; 2013Hu1010.

Examining the reasoning of the original judgment in light of the aforementioned legal principles and records, the lower court did not err in its judgment by misapprehending the legal doctrine regarding “other person’s goods or business” under Article 7(1)10 of the former Trademark Act, as alleged in the grounds of appeal, or by failing to exhaust all necessary deliberations in violation of logical and empirical rules.

3. Whether the trademark of this case is a trademark likely to mislead consumers (ground of appeal Nos. 2 and 4)

The lower court determined that there was no ground for invalidation of the registration of the instant registered trademark under Article 7(1)11 of the former Trademark Act on the ground that the instant registered trademark is not identical or similar to the pre-use trademark. Examining the reasoning of the lower judgment in light of relevant legal principles and records, the lower court did not err in its judgment by misapprehending the legal doctrine on the similarity of trademarks, contrary to what is alleged in the grounds of appeal, or by exceeding the bounds of the principle of free evaluation of evidence in violation of logical and empirical rules, or by failing to exhaust all necessary deliberations.

4. Conclusion

The appeal by the plaintiff is dismissed as it is without merit, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Lee Dong-won

Justices Kim Jae-hyung

Justices Min You-sook

Justices Noh Tae-ok